By Robert A. Clarke and David G. Barker The Ninth Circuit Court of Appeals recently held that the title of a webcast, which included two trademarks belonging to another party, constituted nominative fair use, which protected the defendants from trademark infringement claims. The plaintiff in Applied Underwriters v. Lichtenegger offers workers’ compensation insurance to employers […]
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By Shalayne Pillar and David G. Barker On Friday, the Supreme Court of the United States agreed to hear a case that will decide whether the federal ban on trademark protection for “scandalous” material is unconstitutional. In re Brunetti follows the U.S. Patent and Trademark Office’s (“USPTO’s”) denial of trademark registration for the word “Fuct,” […]
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By Taryn J. Gallup and David G. Barker On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases. In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy has on trademark license rights. In Return Mail, Inc. v. U.S. […]
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By Andrew F. Halaby In Matal v. Tam, the United States Supreme Court held unconstitutional, under the First Amendment, the “disparagement clause” of 15 U.S.C. § 1052(a), which permits denial of a trademark registration application by the United States Patent and Trademark Office on the ground that it may “disparage . . . or bring […]
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On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). Section 35(a) of […]
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Parties competing for rights to a trademark must establish they used the trademark first, or that they have “priority.” One way to prove priority is through “tacking,” which applies the first use date of a similar mark to the mark at issue. On November 22, 2013, in Hana Financial, Inc. v. Hana Bank, the Ninth […]
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Traditionally, a plaintiff seeking a preliminary injunction in a trademark infringement case has been entitled to a presumption of irreparable harm if the plaintiff can prove likelihood of success on the merits. In 2006, the Supreme Court decided eBay, Inc. v. MercExchange, L.L.C. The Court there rejected a categorical rule that a patent infringement plaintiff […]
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